Sakurai Graphic Systems Corp.

Trademark Trial and Appeal Board

Jun 18, 1997

EX (T.T.A.B. Jun. 18, 1997)

Paper No. 16
TJQ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sakurai Graphic Systems Corporation
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Serial No. 74/421,806
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Kit M. Stetina of Stetina Brunda & Buyan for applicant.
Andrew P. Baxley, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Simms, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Sakurai Graphic
Systems Corporation to register the mark OLIVER for "sheet-
fed offset printing presses."1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Act on the ground
that applicant's mark, when applied to applicant's goods, so

1Application Serial No. 74/421,806, filed August 9, 1993,
alleging first use anywhere in September 1975 and first use in
commerce between Japan and the United States on July 13, 1981.
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resembles the previously registered mark OLIVER in typed
form2 and the previously registered mark shown below3

both for "automatic wrapping machines for packaging goods in
film materials; bread and baked goods slicing machines;
combination bread slicing machines and wrapping machines
(combination bread slicing and wrapping machines in Reg. No.
1,239,195); meat slicing machines; label applicating
machines; combination label applicating machines and
printing machines (combination label printing and
applicating machines in Reg. No. 1,239,195), and combination
wrapping, label applying and printing machines (combination
wrapping, label printing and applicating machines in Reg.
No. 1,239,195) as to be likely to cause confusion. The
cited registrations are owned by the same entity.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs.4

2Registration No. 1,207,893, issued September 14, 1982; combined
Sections 8 and 15 affidavit filed.
3Registration No. 1,239,195, issued May 24, 1983; combined
Sections 8 and 15 affidavit filed.
4Applicant's appeal brief is accompanied by new evidence, namely
Exhibit C which is an excerpt from a printed publication.
Trademark Rule 2.142(d) provides that the record in the
application should be complete prior to the appeal and that the
Ser No. 74/421,806
3
Applicant, in urging that the refusal to register be
reversed, argues the following four points: the goods are
different; the trade channels for the goods are different
(more specifically, that registrant's goods are sold to the
food industry whereas applicant's goods are sold to the
printing, publishing and graphic arts industries); the goods
are expensive machines sold only to sophisticated commercial
purchasers; and there have been no instances of actual
confusion during several years of contemporaneous use. In
support of its position, applicant submitted the affidavits
of Yoshikuni Sakurai, applicant's president, and Larry
Fuller, applicant's vice president and general manager. Mr.
Fuller's affidavit is accompanied by three related exhibits,
namely, a customer list, a price list and product brochures.
The Examining Attorney maintains that the goods are
sufficiently similar that, when sold under identical or
substantially identical marks, purchasers are likely to be

Board will ordinarily not consider additional evidence after the
appeal is filed. The rule further provides that if additional
evidence is sought to be introduced, the offering party may
request the Board to suspend the appeal and to remand the
application. Evidence submitted by an applicant after appeal,
without a granted request to suspend and remand for additional
evidence, may be considered by the Board, despite its
untimeliness, if the Examining Attorney does not object to the
new evidence and discusses the new evidence or otherwise
affirmatively treats it as being of record. See, e.g., In re
Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991). See also:
Trademark Trial and Appeal Board Manual of Procedure § 1207.03.
Although in this case the Examining Attorney did not object to
Exhibit C, neither did he discuss this evidence or otherwise
treat it of record. Accordingly, Exhibit C does not form part
of the record in this appeal, and we have not considered it. We
hasten to add, however, that even if this evidence were
considered, it would not change the result.
Ser No. 74/421,806
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confused. The Examining Attorney contends that registrant's
combination label applicating and printing machines are not
limited to the food packaging industry and that, therefore,
it must be presumed that the machines can be used in any
type of packaging industry. As for applicant's goods, he
argues that applicant's goods, in the absence of any
limitations, must be presumed to encompass all kinds of
sheet-fed offset printing presses, including those used to
print labels in the packaging industry. Thus, when the
goods as set forth in the cited registration are compared to
the goods as set forth in the involved application, a
relationship between them is evident. In this connection,
the Examining Attorney submitted excerpts (third-party
patents and articles from printed trade publications)
retrieved from the NEXIS data base which show, according to
the Examining Attorney, that sheet-fed offset printing
presses are commonly used to print labels in the packaging
industry.
A determination of likelihood of confusion requires an
analysis of the relevant factors listed in In re E.I. duPont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In any likelihood of confusion analysis under Section 2(d)
of the Act, two key considerations are the similarities
between the marks and the similarities between the goods.
In the present case, applicant has not disputed the
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similarity between its mark and registrant's marks.5
Indeed, applicant's mark OLIVER in typed form is identical
to registrant's mark OLIVER in typed form as shown in
Registration No. 1,207,893. Further, applicant's mark is
substantially identical to registrant's mark OLIVER in
stylized form as shown in Registration No. 1,239,195. The
insignificant stylized features of this cited mark hardly
detract from the literal identity between it and applicant's
mark.
Given the similarities between the marks, applicant and
the Examining Attorney have concentrated their arguments on
the similarities and dissimilarities between registrant's
combination label printing and applicating machines and
applicant's sheet-fed offset printing presses.
With respect to the goods, it is clear that the Board
must compare applicant's goods as set forth in its
application with the goods as set forth in the cited
registration. In re Trackmobile Inc., 15 USPQ2d 1152 (TTAB
1990). It is not necessary that the goods be similar or
competitive or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It
is sufficient that the respective goods are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same person under

5In this connection, applicant's brief is entirely silent on the
point.
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circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In the present case, we find that applicant's sheet-fed
offset printing presses and registrant's combination label
printing and applicating machines are sufficiently similar
that, when sold under identical or virtually identical
marks, purchasers are likely to be confused. Amcor, Inc. v.
Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981)
[relationship between the goods need not be as close where
the marks are identical or strikingly similar]. In reaching
this conclusion, we are mindful that registrant's goods
would appear to be directed to the food industry whereas,
according to applicant's evidence, applicant's printing
presses are sold to those in the printing, graphic arts and
publishing industries.6 However, applicant's identification
of goods is not so restricted, and we must therefore assume
that the printing presses encompass all types, including
those that are used to print labels in the food industry.
In this connection, the Examining Attorney has submitted

6We note the Examining Attorney's assertion that "[a]lthough
many of the items listed in the registrant's identifications of
goods are clearly limited to the food packaging industry, there
is no such limitation placed on goods identified as combination
label and applicating and printing machines and combination
wrapping, label applying/applicating and printing machines."
(brief, p. 5) The Examining Attorney technically is correct.
Even assuming that all of registrant's goods travel in only
limited trade channels, however, applicant's goods are not
limited in any fashion. Thus, the result in this case would not
change.
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excerpts retrieved from the NEXIS database which establish
that sheet-fed offset printing presses are used to print
labels for packaging, with some applications in the food
industry. By way of example, we highlight the following
excerpts:
...the bulk of label volume [for food
cans] is done on sheetfed offset
presses...
Graphic Arts Monthly, September 1995
For commercial printers, perhaps the
easiest point of market entry is in
packaging labels, i.e., producing paper
labels--typically for canned goods--on
conventional printing presses.
Graphic Arts Monthly, October 1995
Inasmuch as the record establishes that offset printing
presses are used to print labels for packaging, including
labels in the food industry, we conclude that applicant's
goods are related to registrant's combination label printing
and applicating machines.
The record shows that some of applicant's printing
presses are quite expensive. Even conceding that
registrant's and applicant's customers are sophisticated, we
would point out that even sophisticated purchasers would not
be immune from source confusion. In re Pellerin Milnor
Corp., 221 USPQ 558, 560 (TTAB 1983). We find this to be
especially the case here where identical and/or
substantially identical marks are involved, and there is no
evidence showing any third-party uses of the same and/or
similar marks in the printing field.
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The evidence bearing on the absence of actual confusion
between the marks does not compel a different result in this
case. Although applicant has supplied a list of customers
for its goods, no evidence has been provided as to the level
of sales of its goods. Thus, there is no meaningful way to
evaluate the opportunity for actual confusion to occur among
purchasers. Further, this factor is of limited probative
value in the context of an ex parte proceeding wherein there
is no way to assess what the experience of the registrant
has been. In re Cruising World, Inc., 219 USPQ 757, 758
(TTAB 1983). Moreover, the issue before us in not one of
actual confusion, but only the likelihood of confusion.
Finally, to the extent that any of the points raised by
applicant casts doubt on our decision, we resolve that
doubt, as we must, in favor of the prior registrant. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025
(Fed. Cir. 1988).
We conclude that consumers familiar with registrant's
combination label printing and applicating machines sold
under the mark OLIVER would be likely to believe, upon
encountering applicant's mark OLIVER for sheet-fed offset
printing presses, that the goods originated with or were
somehow associated with or sponsored by the same entity.
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Decision: The refusal to register is affirmed.
R. L. Simms
T. J. Quinn
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board
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